4 Tex. Intell. Prop. L.J Texas Intellectual Property Law Journal Spring Recent Development RECENT DEVELOPMENTS IN PATENT LAW

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1 4 Tex. Intell. Prop. L.J. 481 Texas Intellectual Property Law Journal Spring 1996 Recent Development RECENT DEVELOPMENTS IN PATENT LAW Todd Mattingly a1 Paul Morico aa1 Linda Stokley aaa1 Janelle Waack aaaa1 Copyright (c) 1996 by the State Bar of Texas, Intellectual Property Law Section; Todd Mattingly, Paul Morico, Linda Stokley and Janelle Waack Table of Contents I. Introduction 482 II. Patent Prosecution 482 A. The Obviousness Analysis in Chemical Cases Putting In re Durden in Its Place In re Ochiai In re Brouwer 483 B. The Role of Expert Declarations in Overcoming 35 U.S.C. 112 Rejections In re Alton 485 C. Best Mode: United States Gypsum Co. v. National Gypsum Co. 486 D. Inequitable Conduct: B.F. Goodrich Co. v. Aircraft Braking Systems Corp. 487 E. Reduction to Practice: In re Asahi 488 III. Litigation 489 A. On Sale Bar: In re Mahurkar Double Lumen Hemodialysis Catheter Patent Litigation 489 B. Obviousness: Para-Ordnance Manufacturing, Inc. v. SGS Importers International, Inc. 490 C. Claim Interpretation: Athletic Alternatives, Inc. v. Prince Manufacturing, Inc. 491 D. Prosecution History Estoppel Limits on the Doctrine of Equivalents: Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. 493 E. Summary Judgment and the Doctrine of Equivalents: Lifescan Inc. v. Home Diagnostics Inc. 494 IV. Licensing 495 A. The Scope of an Implied License: Carborundum Co. v. Molten Metal Equipment Innovations Inc. 495 V. Conclusion 496

2 *482 I. Introduction The purpose of this article is to review selected patent decisions reported in the first quarter of This article is not intended to provide a comprehensive reference, but instead represents those developments the authors believe have impacted the practice of patent law. II. Patent Prosecution A. The Obviousness Analysis in Chemical Cases Putting In re Durden in Its Place In the area of patent prosecution, the Federal Circuit clarified the non-obviousness requirement of 35 U.S.C. 103 in chemical cases by limiting the court s earlier decision in In re Durden 1 to its facts. This should reestablish a fact-based obviousness analysis, as required by 35 U.S.C. 103, and put a stop to a longtime process of the Patent and Trademark Office (PTO) in which chemical patent applications have been rejected as per se obvious on the basis of Durden. A similar change was made in the biotechnology field on November 1, 1995, when the Biotechnological Process Patents Act 2 was signed into law In re Ochiai 4 In Ochiai, the Federal Circuit held that the use of a per se obviousness determination for a chemical process must stop because it is legally inconsistent with the fact-intensive analysis required by 35 U.S.C Ochiai filed a patent application directed to a conventional process using a new, non-obvious acid to make a new non-obvious cephem. 5 In rejecting the patent application, the examiner reasoned that since a conventional process was being claimed, the only difference from the prior art was the selection of a slightly *483 different starting material to make a slightly different final product. 6 The Board of Patent Appeals and Interferences (BPAI) affirmed, denying Ochiai s argument that the novelty of the starting material and final compounds should be dispositive of the obviousness of the invention. 7 Ochiai appealed. The Federal Circuit held that the obviousness test is statutory, requiring a comparison of a claim s subject matter as a whole with the prior art to which said subject matter pertains. 8 The court explained that the inquiry is highly fact-specific, regardless of whether the invention is a process for making, or a process of using, or some other process. 9 Applying this fact-specific test, the Federal Circuit concluded that Ochiai s process invention was not prima facie obvious and reversed the examiner s rejection. 10 The court acknowledged that some generalized commentary found in the case law may have inadvertently provided encouragement to those who desire per se rules in this area. 11 But the case law is grounded on a fact-intensive comparison of the claimed process with the prior art, especially w hen any applicant properly presents and argues suitable method claims, they should be examined in light of all relevant factors, free from any presumed controlling effect of Durden or any other precedent. 12 The court further explained that the conflict between the cases cited by the BPAI and those cited by Ochiai is not in the legal rule, but in the application of the legal rules to different claims and fields of art In re Brouwer 14 In Brouwer, the examiner erroneously rejected claims directed to a process for making a new and non-obvious resin catalyst based on a per se obviousness analysis instead of on particularized findings regarding the prior art references. *484 Brouwer filed a divisional patent application claiming a process for preparing sulfo-alkylated resins. 15 The examiner rejected Brouwer s claims in light of the combined teaching of two references. 16 The BPAI affirmed the examiner s rejection and adhered to that decision on reconsideration. 17 The Board reasoned that if someone wanted to make the non-obvious resin resulting from Brouwer s process, they would know how to make it on the basis of the prior art. 18 Brouwer appealed. Brouwer contended that both the examiner and the Board erred by relying on Durden, and failing to weigh the differences between the claimed invention and the prior art references. Brouwer also contended that the Board erred in treating the

3 invention s disclosure as prior art. 19 The Federal Circuit reversed the rejection, because the legal test of obviousness requires a comparison of the claim s subject matter as a whole with the prior art to which said subject matter pertains. 20 The court added that the inquiry is fact-specific, whether the invention is a process for making or a process of using, or some other process. 21 The court noted that the mere fact that a device or process utilizes a known scientific principle does not alone make that device or process obvious. 22 Nor is the process rendered obvious by the mere possibility that the prior art could be modified to lead to the resin recited in that claim, absent a suggestion in the prior art of the desirability of such a modification or replacement. 23 Finally, the court held that there was simply no suggestion to practice the claimed process in the references cited by the examiner. 24 The court required a fact-based inquiry instead of a prima facie analysis of obviousness stating that: [t]he examiner erred by resting his prima facie case of obviousness on Durden rather than on particularized findings regarding a set of one or more references that would make the claimed process obvious, an error the Board failed to correct. When any applicant properly presents and argues suitable method claims, they should be examined *485 in light of all relevant factors, free from any presumed controlling effect of Durden or any other precedent. 25 B. The Role of Expert Declarations in Overcoming 35 U.S.C. 112 Rejections In re Alton 26 In Alton, the Federal Circuit held that the patent examiner erred by viewing an expert s declaration regarding the adequacy of the applicant s disclosure as opinion evidence addressing a question of law, rather than evidence presented regarding a question of fact. 27 Human gamma interferon is a protein that stimulates the immunological activity of a subset of T-Cells and other immune effector cells. 28 Alton filed a patent application claiming human gamma interferon, which was rejected. On appeal, the BPAI affirmed the rejection under 35 U.S.C for failure of the specification to adequately describe the subject matter of the claims. 29 Alton elected further prosecution. Claim 70 of the application described a human gene interferon that is made of a specific amino acid sequence. 30 Example 5 disclosed the sequence of claim 70 but also disclosed the substitution of asparagine with another amino acid, lysine. The Board stated that Example 5 did not adequately describe Claim Alton submitted a declaration by an expert who offered reasons why, in his opinion, one of ordinary skill in the art in 1983 would have understood Example 5 to describe what was claimed in Claim The examiner rejected the expert s declaration as opinion evidence rather than factual evidence and issued a final rejection. 33 The Board affirmed the examiner, and Alton appealed. The Federal Circuit explained the law in this area as follows: If the applicant claims embodiments of the invention that are completely outside the scope of the specification, then the examiner or Board need only establish this fact to make out a prima facie case. If, on the other hand, the specification contains a description of the *486 claimed invention, albeit not in ipsis verbis (in the identical words), then the examiner or Board, in order to meet the burden of proof, must provide reasons why one of ordinary skill in the art would not consider the description sufficient. Once the examiner or Board carries the burden of making out a prima facie case of unpatentability, the burden of coming forward with evidence or argument shifts to the applicant. To overcome a prima facie case, an applicant must show that the invention as claimed is adequately described to one skilled in the art. After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of the evidence with due consideration to persuasiveness of argument. 34 The Federal Circuit ruled that the examiner s final rejection erroneously viewed the expert s declaration as opinion evidence addressing a question of law, rather than evidence regarding a question of fact. Since the examiner dismissed the declaration without giving an adequate explanation of why it failed to rebut the Board s prima facie case of inadequate description, the Federal Circuit reversed and remanded Alton s case. C. Best Mode: United States Gypsum Co. v. National Gypsum Co. 35 In United States Gypsum, the Federal Circuit upheld a summary judgment holding of invalidity for failure to disclose the best

4 mode of practicing the claimed invention. 36 Williams, an employee of United States Gypsum (USG), developed a joint compound for filling and coating the joints between adjacent gypsum wallboards containing a silicone-treated expanded perlite. 37 Williams experimented with several different types of silicone-treated expanded perlite, including a sample of Sil-42 perlite provided by Silbrico Corporation having an undisclosed composition. 38 The Sil-42 had a major advantage over other perlites because it did not need to be screened before being used in a joint compound. 39 In addition, Williams found that use of Sil-42 in the joint compound eliminated the coarse look of other lightweight fillers, resisted breakdown under vacuum treatment, and yielded a joint compound that was light weight, easy to sand, and exhibited good noncracking and adhesion properties. 40 *487 When USG s patent attorney began preparing a patent application for the invention, he asked Williams to forward a description of his best formulation for inclusion in the application. 41 All the formulations that Williams sent to the attorney listed Sil-42 as a component. 42 Sometime before the patent application was filed, however, a USG executive instructed the attorney to omit from the application any reference to Sil-42 or the commercial supplier of Sil After the patent issued, USG sued National Gypsum Co. (National) for infringement of the patent, and National moved for summary judgment, arguing that the patent was invalid for failure to disclose the best mode of practicing the claimed invention. 44 The Federal Circuit stated that the district court correctly concluded on summary judgment that there was no genuine dispute that Williams believed that Sil-42 perlite represented a substantially better material than the other silicone-treated expanded perlites with which he had experimented. 45 The specification s general definition of perlite and use of the term silicone treated expanded perlite did not indicate the chemical composition of Sil-42 perlite. 46 That the composition and method of manufacture of Sil-42 perlite were trade secrets and thus were unknown to Williams did not excuse compliance with the best mode requirement. 47 D. Inequitable Conduct: B.F. Goodrich Co. v. Aircraft Braking Systems Corp. 48 In B.F. Goodrich, the Federal Circuit was troubled by a prosecuting attorney s careless actions before the Patent Office, which led to the grant of a patent that was invalid over a withheld reference. B.F. Goodrich (BFG) failed to submit several pieces of known prior art and failed to notify the PTO of BFG s presentations to customers that may have implicated the on-sale bar under 35 U.S.C. 102(b). 49 BFG further submitted a declaration by BFG s Director of Engineering stating that at no time in the literature, trade journals, seminars or trade shows had he seen the subject matter in *488 the BFG patent application. 50 The Federal Circuit deferred to the trial court s decision that there was no intent to deceive, but noted that b arely dodging a bullet based on our deference to a trial court s decision on the factual question of intent and on a matter of equity does not merit approval or justify complacency. 51 E. Reduction to Practice: In re Asahi 52 During reexamination of its patent directed to a double pipe system, Asahi opted to show reduction to practice prior to the filing date of an asserted patent reference. Nevertheless, the examiner was not persuaded by Asahi s declaration pursuant to 37 C.F.R and issued a final rejection of the claims under 35 U.S.C. 102(a) or (e). 53 On appeal, the Board reversed the rejection under section 102(a), but affirmed the rejection under section 102(e) because the Rule 131 declaration did not show that the invention existed and worked for its intended purpose. 54 The Federal Circuit, however, emphasized a distinction between simple and complex devices and noted its prior holding that [t]here are some devices so simple that a mere construction of them is all that is necessary to constitute reduction to practice. 55 Here, Asahi had published photographs that showed the critical dimensions of its claimed double pipe system in trade journals prior to the filing date of the asserted reference. 56 The Federal Circuit concluded that Asahi s inventive device was so simple that mere construction of it is was all that was necessary to constitute reduction to practice. 57 *489 III. Litigation A. On Sale Bar: In re Mahurkar Double Lumen Hemodialysis Catheter Patent Litigation 58 In Mahurkar, the Federal Circuit looked to the totality of the circumstances and the policies behind 35 U.S.C. 102(b) 59 to affirm the district court s decision that a sham sale made solely to satisfy a license agreement did not commercialize the invention and therefore was not an on-sale bar. 60

5 Mahurkar granted Quinton Instruments Co. an exclusive license to make, use, and sell its catheter before any patent application was filed. 61 The license was conditioned on Quinton marketing the catheter by Sept. 30, To meet this deadline, Quinton s CEO set up a sham sale of prototype catheters on August 31, The prototypes were not perfected and could not be used as catheters. 64 Although the parties disputed whether the sale was sufficient to maintain Quinton s exclusive status, they settled the dispute, and Quinton retained rights as an exclusive licensee. 65 The catheter invention was later patented, and the patent was the subject of litigation between Mahurkar and Impra Inc.; Impra asserted patent invalidity based on Quinton s prototype sale. 66 The district court found that Impra had infringed, and further concluded that the prototype sale did not place Mahurkar s device on sale within the meaning of 35 U.S.C. 102(b), even though it was a sale under the Uniform Commercial Code and the sale reduced the prototype catheters to practice for nonexperimental purposes. 67 *490 Impra appealed, arguing that the prototype sale invalidated the patent under section 102(b). 68 According to Impra, the district court improperly considered the circumstances surrounding the sale, particularly Mahurkar s contention that the sale was a sham transaction. 69 The Federal Circuit disagreed, explaining that whether or not a device has been placed on sale is not subject to a mechanical rule, but is dependent on the totality of the circumstances, considered in view of the policies underlying section 102(b). 70 The court further explained that commercialization is the central focus for the on-sale determination and that Quinton s sham sale did not result in commercialization. 71 B. Obviousness: Para-Ordnance Manufacturing, Inc. v. SGS Importers International, Inc. 72 In Para-Ordnance, the Federal Circuit affirmed the district court s holding that a patent to a conversion kit for expanding the ammunition capacity of semi-automatic handguns was invalid for obviousness in view of a prior art handgun, the Llama Omni, and thus not infringed. 73 Having an exclusive licensee of the patent-in-suit and the exclusive right to sue, Para-Ordnance brought suit against SGS, alleging that SGS s Llama IX-C and IX-D handguns infringed the claims of the patent. 74 Specifically, the patent claimed an intermediate portion of the frame of the conversion kit that that converged between a widened grip portion and a narrower top portion. 75 The Federal Circuit held that the angled plastic tabs of the two grip covers of the Llama Omni, which converged in the direction of the top grip, were sufficiently suggestive of the claimed one-piece frame with converging areas at the top of the grip to render the patent invalid. 76 In concluding the patent was obvious, the Federal Circuit observed that not only was convergence in the prior art, but it was there as *491 part of the solution to the need for a handgun with an increased magazine capacity. 77 This was exactly the same need that was addressed by the Para-Ordnance conversion kit. The court conceded that the plastic tabs inside the Llama Omni grip were not part of the frame, nor did the frame itself without the grip covers attached show convergence of the kind claimed in the patent. 78 The court reasoned, however, that the inventor would presumably have examined the Llama Omni gun s components and seen that the problem of expanding ammunition capacity was solved by widening the magazine to hold more cartridges. 79 The majority characterizes Chief Judge Archer s dissent as arguing that there was no motivation or teaching for a person of ordinary skill in the art to use a frame made in a single piece with converging side face portions. 80 The majority dismissed this argument, stating that the motivation leaps at a person of ordinary skill in the art from thorough inspection of the assembled Llama Omni. 81 C. Claim Interpretation: Athletic Alternatives, Inc. v. Prince Manufacturing, Inc. 82 In Athletic Alternatives, the Federal Circuit reviewed de novo the district court s grant of summary judgment of noninfringement in favor of the defendant. 83 The decision on appeal turned on the interpretation of claim 1 of the patent-in-suit, which as noted by the Federal Circuit under Markman v. Westview Instruments, Inc., 84 is a question of law for the court, and therefore reviewable de novo. 85 The patent-in-suit was directed to an improved tennis racket having strings splayed alternately above and below the center plane of the racket frame. 86 At issue was the language in claim 1 concerning the offset distance (d i) between the racket strings ends. 87 Claim 1 recited that d i varies between minimum distances for the first and last string ends in the sequence and a maximum distance for a string end *492 between the first and last string ends in the sequence. 88 The district court interpreted

6 claim 1 to require that the offset distance between the string ends have at least three values: a minimum value, a maximum value and at least one intermediate value. 89 The district court granted summary judgment in favor of the defendant on the ground that claim 1, as interpreted, did not literally read on the defendant s Vortex racket, which only had a minimum and a maximum offset distance. 90 In determining whether the district court properly interpreted claim 1, the Federal Circuit first looked to the claim language itself. 91 In particular, the Federal Circuit focused on the phrase varies between. 92 The court concluded that this claim language was susceptible to two equally plausible meanings, one which rendered the Vortex racket infringing and the other which did not. 93 The court found no guidance in the specification because a definition of the phrase varies between did not appear anywhere in the specification. 94 The court then looked to the prosecution history, which contained contradictory interpretations and thus, also provided no guidance. 95 The court next turned to the doctrine of claim differentiation and again found no help in interpreting the claim. 96 Finally, the court turned to 35 U.S.C Specifically, the court pointed to 35 U.S.C , which requires that the specification conclude with claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 97 The court observed that the primary purpose behind this requirement is to guard against unreasonable advantages to the patentee and disadvantages of others arising from uncertainty as to their respective rights. 98 Relying on its decision in Hoganas AB v. Dresser Industries, the court stated: Were we to allow [plaintiff] AAI successfully to assert the broader of the two senses of between against Prince, we would undermine the fair notice function of the requirement that the patentee distinctly claim the subject matter disclosed in the patent from which he can exclude others temporarily. Where there is an equal choice between a broader and a *493 narrower meaning we consider the notice function of the claim to be best served by adopting the narrower meaning. 99 The Federal Circuit concluded that claim 1 of the patent-in-suit included the limitation that the splay-creating string end offset distance must take on at least three values, that is a minimum, a maximum, and at least one intermediate value. 100 The court thus affirmed the district court s conclusion that claim 1 did not read on the Vortex racket. 101 Judge Nies concurred in the result. 102 However, she rejected the majority s conclusion that the 35 U.S.C requirement that an applicant distinctly claim the subject matter compels adoption of the narrower of two equally plausible interpretations. 103 She further stated that the majority s analysis was illogical, noting that narrowness cannot be equated with definiteness. 104 D. Prosecution History Estoppel Limits on the Doctrine of Equivalents: Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. 105 In Festo, the Federal Circuit held that prosecution history estoppel did not bar doctrine of equivalents infringement in a case where the reason for a change to the patent claim was not stated in the prosecution history, was vigorously disputed at trial, and was not at all clear to the trial judge, who called the addition a mystery. 106 The court observed that prosecution history estoppel, as a limitation to infringement under the doctrine of equivalents, requires a close examination of both what was surrendered and why it was surrendered. 107 Thus, determining whether prosecution history estoppel applies when there has been a change in claim language during prosecution, requires consideration of both what was changed and why it was changed. 108 *494 The issue of equivalents infringement of the patent-in-suit focused on various specific elements of the claimed invention. At trial there was testimony by the inventor and by experts on both sides, accompanied by extensive argument of counsel. 109 The prosecution history was presented to the jury, as was the special master s findings on the issue of equivalents infringement. 110 The reason for the change in the claim language at issue was not stated in the prosecution history, was vigorously disputed at trial, and was not at all clear to the trial judge. 111 The court upheld the finding of infringement by equivalents since all relevant factors were considered by the jury, and the reason for the change in claim language was a mystery. 112 E. Summary Judgment and the Doctrine of Equivalents: Lifescan Inc. v. Home Diagnostics Inc. 113 The Federal Circuit held that summary judgment was improper when a jury could have found that the steps of a patented method for measuring glucose levels in blood was equivalent to the method accused of infringement and remanded the case

7 for trial. 114 Lifescan Inc. patented a method for patients to self-monitor the amount of glucose in their blood. 115 Home Diagnostics Inc. (HDI) sold a glucose meter similar to Lifescan s meter. 116 But the HDI meter did not compare the initial and final reflectance readings to one another as did the Lifescan meter. 117 The HDI meter compared the sample readings to a dry reflectance that was determined at the factory and programmed into the meter. 118 Lifescan sued HDI for infringing its patent. The district court granted HDI s motion for a summary judgment on both literal infringement and infringement under the doctrine of equivalents. 119 The district court construed the claims as limited to a method in which the initial measurement of dry *495 reflectance is taken on the same test strip just before the blood is applied, and not on a sample test strip whose reflectance is taken at the factory. 120 Lifescan appealed. Although the summary judgment based on literal infringement was affirmed, summary judgment on infringement under the doctrine of equivalents was reversed. 121 The Federal Circuit agreed with Lifescan that a reasonable jury could have found an equivalent to the patented method in determining the dry reflectance in advance, and then comparing the reading taken at the factory with subsequent readings taken during use. 122 Both methods first compare dry and wet reflectance measurements, and then compare the reflectance when the dye was incubated, based on identical timing. 123 HDI argued that its method was outside the range of available equivalents because of prior art that measures glucose levels by comparing strip reflectance readings with a predetermined reference value. 124 The Federal Circuit decided that the prior art raised a factual question of the significance of the prior art that can not be decided as a matter of law, but must be weighed by the trier of fact in the course of determining whether the patented and the accused methods are substantially the same. 125 The summary judgment of non-infringement under the doctrine of equivalents was therefore reversed, and the case remanded. 126 IV. Licensing A. The Scope of an Implied License: Carborundum Co. v. Molten Metal Equipment Innovations Inc. 127 In Carborundum, the Federal Circuit held that the scope of a license may either be express or implied by the circumstances of the sale. 128 The court stated that an implied license requires a showing that the equipment sold has no noninfringing uses and that the circumstances of the sale plainly indicate *496 that a license should be inferred. 129 Once it is determined that a license should be implied, the circumstances of the sale are then examined to determine the scope of the implied license. 130 The following circumstances indicated that the term of the implied license was limited to the life of the unpatented component: (1) the assignee sold an unpatented component whose only use was in the apparatus embodying the patent-in-suit; (2) the assignee did not place any express restrictions on its customers as to the use of the unpatented component; and (3) a one-time upfront premium charge for the first unpatented component purchased by a customer was deemed insufficient by the court to constitute a one-time royalty payment to practice the claimed invention. 131 Different circumstances might have led to a different result. 132 The sale of the entire claimed apparatus would have created an implied license for the useful life of the apparatus and would have provided the right to repair the apparatus. Under those circumstances, the assignee s customers would have had the right to replace the unpatented component with one purchased from another source. 133 V. Conclusion

8 The authors intent was to present a brief, but meaningful, analysis of selected cases reported in the United States Patent Quarterly, Second Series for the first quarter of Complete information on all of the issues discussed in these cases was not our purpose, but we hope that our selections have peaked your interest and directed you to further study of the issues discussed in our selections. Footnotes a1 Arnold, White & Durkee, Houston, Texas. aa1 Arnold, White & Durkee, Houston, Texas. aaa1 Arnold, White & Durkee, Houston, Texas. aaaa1 Arnold, White & Durkee, Houston, Texas F.2d 1406, 1410, 226 U.S.P.Q. (BNA) 359, 362 (Fed. Cir.1985) (holding that while an otherwise old process becomes a new process when a previously unknown starting material is used to produce a new, but expected product, it is not necessarily non-obvious under section 103). 2 See 1995 U.S.C.C.A.N. 395 (purpose and summary of the bill); 141 Cong. Rec. H10095 (daily ed. October 17, 1995) (text of enacted bill amending 35 U.S.C. 103, 282); 35 U.S.C. 103(b) (1994). 3 See 1996 U.S.C.C.A.N (statement by President of the United States upon signing S. 1111) F.3d 1565, 37 U.S.P.Q.2d (BNA) 1127 (Fed. Cir.1995). 5 at 1567, 37 U.S.P.Q.2d at at 1568, 37 U.S.P.Q.2d at 1129 (basing the rejection upon identity with In re Durden). 7 at , 37 U.S.P.Q.2d at at 1569, 37 U.S.P.Q.2d at (quoting In re Kuehl, 475 F.2d 658, 665, 177 U.S.P.Q. (BNA) 250, 255 (C.C.P.A. 1973)) at 1572, 37 U.S.P.Q.2d at (quoting In re Dillon, 919 F.2d 688, 695, 16 U.S.P.Q.2d (BNA) 1897, 1903 (Fed. Cir.1990), cert. denied, 500 U.S. 904 (1991).

9 13 (The court disavowed the use of per se rules of obviousness that eliminate the need for fact-specific analysis of claims and prior art. It found that such rules were inconsistent with section 103. The precedents did not establish any per se rules of obviousness. Any conflicts as may be perceived to exist derive from an impermissible effort to extract per se rules from decisions that disavow precisely such extraction. ) F.3d 422 (Fed. Cir.1996). 15 at at (quoting In re Kuehl, 475 F.2d 658, 665, 177 U.S.P.Q. (BNA) 250, 255 (C.C.P.A. 1973)). 22 (quoting Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1053, 5 U.S.P.Q.2d (BNA) 1434, 1440 (Fed. Cir.1988)) at See also In re Ochiai, 71 F.3d 1565, 1570, 37 U.S.P.Q.2d (BNA) 1127, 1132 (Fed. Cir.1995) ( [T]here are not Durden obviousness rejections or Albertson obviousness rejections, but rather only section 103 obviousness rejections. ) F.3d 1168, 37 U.S.P.Q.2d (BNA) 1578 (Fed. Cir.1996). 27 at 1174, 37 U.S.P.Q.2d at at 1170, 37 U.S.P.Q.2d at at 1171, 37 U.S.P.Q.2d at at 1170, 37 U.S.P.Q.2d at at 1171, 37 U.S.P.Q.2d at 1580.

10 32 at , 37 U.S.P.Q.2d at at , 37 U.S.P.Q.2d at at 1175, 37 U.S.P.Q.2d at (citation omitted) (quoting In re Oetiker, 977 F.2d 1443, 1445, 24 U.S.P.Q.2d. (BNA) 1443, 1444 (Fed. Cir.1992)) F.3d 1209, 37 U.S.P.Q.2d (BNA) 1388 (Fed. Cir.1996). 36 at 1216, 37 U.S.P.Q.2d at at , 37 U.S.P.Q.2d at at 1211, 37 U.S.P.Q.2d at , 37 U.S.P.Q.2d at , 37 U.S.P.Q.2d at at 1212, 37 U.S.P.Q.2d at at , 37 U.S.P.Q.2d at F.3d 1577, 37 U.S.P.Q.2d (BNA) 1314 (Fed. Cir.1996). 49 at 1581, 37 U.S.P.Q.2d at at 1580, 37 U.S.P.Q.2d at at 1585, 37 U.S.P.Q.2d at 1320.

11 52 68 F.3d 442, 37 U.S.P.Q.2d (BNA) 1204 (Fed. Cir.1995). 53 at 444, 37 U.S.P.Q.2d at (stating that proof of actual reduction to practice requires a showing that the invention existed and worked for its intended purpose) (citing Newkirk v. Lulejian, 825 F.2d 1581, 3 U.S.P.Q.2d (BNA) 1793 (Fed. Cir.1987)). 55 at 445, 37 U.S.P.Q.2d at 1206 (citing Sachs v. Wadsworth, 48 F.2d 928, 929, 9 U.S.P.Q. (BNA) 252, 253 (C.C.P.A. 1931); King Instrument Corp. v. Otari Corp., 767 F.2d 853, 861, 226 U.S.P.Q. (BNA) 402, 407 (Fed. Cir.1985), cert. denied, 475 U.S (1986); Gordon v. Hubbard, 347 F.2d 1001, 1006, 146 U.S.P.Q. (BNA) 303, 307 (C.C.P.A. 1965); Buchanan v. Lademann, 54 F.2d 425, 12 U.S.P.Q. (BNA) 28 (C.C.P.A. 1932)). 56 at 446, 37 U.S.P.Q.2d at at 447, 37 U.S.P.Q.2d at F.3d 1573, 37 U.S.P.Q.2d (BNA) 1138 (Fed. Cir.1995). 59 The court lists the policies underlying 35 U.S.C. 102(b) as: (1) discouraging removal of inventions from the public domain that the public reasonably has come to believe are freely available; (2) encouraging the prompt and widespread disclosure of inventions; (3) allowing an inventor a reasonable amount of time following sales activity to determine the potential economic value of a patent; and (4) prohibiting an inventor from commercially exploiting his invention beyond the statutorily prescribed time. 71 F.3d at 1577, 37 U.S.P.Q.2d at , 37 U.S.P.Q.2d at at 1574, 37 U.S.P.Q.2d at , 37 U.S.P.Q.2d at at 1575, 37 U.S.P.Q.2d at at 1574, 37 U.S.P.Q.2d at at 1576, 37 U.S.P.Q.2d at 1141.

12 69 at , 37 U.S.P.Q.2d at at 1577, 37 U.S.P.Q.2d at 1141 (citing Ferag AG v. Quipp Inc., 45 F.3d 1562, 1565, 33 U.S.P.Q.2d (BNA) 1512, 1515 (Fed. Cir.1995)). 71, 37 U.S.P.Q.2d at F.3d 1085, 37 U.S.P.Q.2d (BNA) 1237 (Fed. Cir.1995). 73 at 1086, 37 U.S.P.Q.2d at at 1087, 37 U.S.P.Q.2d at , 37 U.S.P.Q.2d at at 1089, 37 U.S.P.Q.2d at (It was shown that the Llama Omni handgun was known to the inventor, but not to the Patent and Trademark Office.). 80 at 1090, 37 U.S.P.Q.2d at F.3d 1573, 37 U.S.P.Q.2d (BNA) 1365 (Fed. Cir.1996). 83 at 1578, 37 U.S.P.Q.2d at F.3d 967, 979, 34 U.S.P.Q.2d (BNA) 1321, 1329 (Fed. Cir.1995) (en banc), aff d, 1996 WL (U.S. 1996) 85 Athletic Alternatives, 73 F.3d at 1578, 37 U.S.P.Q.2d at at 1574, 37 U.S.P.Q.2d at at 1578, 37 U.S.P.Q.2d at

13 89 at 1577, 37 U.S.P.Q.2d at at 1578, 37 U.S.P.Q.2d at at 1579, 37 U.S.P.Q.2d at at 1578, 37 U.S.P.Q.2d at at , 37 U.S.P.Q.2d at at , 37 U.S.P.Q.2d at at 1581, 37 U.S.P.Q.2d at Athletic Alternatives, 73 F.3d at 1581, 37 U.S.P.Q.2d at 1372 (applying Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 951, 28 U.S.P.Q.2d (BNA) 1936, 1939 (Fed. Cir.1993)) at 1583, 37 U.S.P.Q.2d at F.3d 857, 37 U.S.P.Q.2d (BNA) 1161 (Fed. Cir.1995). 106 at 864, 37 U.S.P.Q.2d at , 37 U.S.P.Q.2d at 1165.

14 , 37 U.S.P.Q.2d at F.3d 358, 37 U.S.P.Q.2d (BNA) 1595 (Fed. Cir.1996). 114 at 359, 37 U.S.P.Q.2d at at 360, 37 U.S.P.Q.2d at 359, 37 U.S.P.Q.2d at at 361, 37 U.S.P.Q.2d at at 362, 37 U.S.P.Q.2d at , 37 U.S.P.Q.2d at , 37 U.S.P.Q.2d at F.3d 872, 37 U.S.P.Q.2d (BNA) 1169 (Fed. Cir.1995).

15 128 at 878, 37 U.S.P.Q.2d at (citing Met-Coil Sys. Corp. v. Korners Unlimited, Inc., 803 F.2d 684, 686, 231 U.S.P.Q. (BNA) 474, 476 (Fed. Cir.1986)) at 879, 37 U.S.P.Q.2d at at , 37 U.S.P.Q.2d at TXIPLJ 481